INTHE MATTEROF A COMPLAINT PURSUANT TO THE

INTHE MATTEROF A COMPLAINT PURSUANT TO THE
CANADIAN INTERNET REGISTRATION AUTHORITY
DOMAIN NAME DISPUTE RESOLUTIONPOLICY
Domain Name:
Synvisc.ca
Complainant :
Genzyme Corporation
Registrant :
Johnny Carpela
Registrar :
DomainsAtcost Corp.
Arbitrator :
Jacques Biron
Service provider :
British Columbia International Commercial Arbitration Center
to be the CIRA — approved Dispute Resolution Provider
DECISION
A... The preamble
1...The Registrant was notified of the complaint and commencement of the dispute resolution
process on September 21, 2007 by way of letter confirming compliance of the complaint and
commencement of the dispute resolution process.
2...Attempts to deliver the Complaint to the Registrant have been unsuccessful.
3...Resulting that the Registrant has not provided a Response.
4...As permitted given the absence of a Response, the Complainant may asked to be used the
Rule 6.5 to convert from a panel of three to a single Arbitrator.
5...This Complaint is based on the trade-mark SYNVISC owned by the Complainant,
Genzime Corporation ( "Genzime"). Genzime uses the trade-mark SYNVISC in Canada and
in numerous countries throughout the world to identify its pharmaceutical treatment for
osteoarthritis of the knee.
B ...The Arbitrator
6...The Arbitrator hereby declares that he has no direct or indirect relation whit any of the
parties to this Arbitration. The Arbitrator declares that he has instituted an ethical wall, and he
did not receive any other information related to any matter involving the parties of this
Arbitration.
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7...The arbitration was conducted in conformity with the CIRA Policies, Rules and
Procedures — CIRA Domain Name Dispute Resolution Rules in accordance with Rule 4.4
establishing the date of commencement of the proceedings as of September 21, 2007.
8... Since March 31, 2003, the Complainant is the current owner of the registered Canadian
trade-mark, SYNVISC Design, Registration No. TMA 340,261 registered on May 13, 1988
by BIOMATRIX INC. (U.S.A.) change in title on December 18, 2000 to Genzyme
Biosurgery Corporation (U.S.A.).
9...It is established that the Complainant satisfies paragraph 2(q) of CIRA's Canadian
Presence Requirements (CPR).
10...As submitted by the Complainant, I agree that the jurisdiction of the Superior court of
the province or territory in Canada shall be establish in the City of Ottawa in the Province of
Ontario because the Complainant's CPR.
C...The parties
11...The Complainant, GENZIME CORPORATION is a company, whose principal place
of business is 500 Kendall St., Cambridge, Massachusetts, 02142, U.S.A.
12...The Complainant's authorized representative in this administrative proceedings is Me
Cynthia D. Mason from Ogilvy Renault LLP, Barristers and Solicitors whose principle place
of business is Royal Bank Plaza, South Tower, suite 3800, Toronto, Ontario, M5J 2Z4.
13...The Registrant name for the domain name is Manoj Sikka (schedule B of the
Complaint) is represented by the administrative contact JOHNNY CARPELA who has an
unknown principal place of business, using as business address: VMO P.O. Box 188, Sumas,
WA 98295, U.S.A.
D...The Domain name and Registrar
14...The dispute domain name is SYNVISC.CA . The Registrar for the domain name is
DomainsAtcost Corp.. The dispute domain name was approved on November 08, 2001 and
renewed on November 08, 2007 under Domain Number 356,730.
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E... Procedural History
15...This is a proceeding under the Canadian Internet Registration Authority (CIRA) Domain
Name Resolution Policy ( Version 1.1) (the Policy) and the CIRA Domain Name Dispute
Resolution Rules (Version 1.2) ( the Rules).
16...The History of the proceedings, according to information provided by the dispute
resolution provider, British Columbia International Commercial Arbitration Centre
(BCICAC) recognized as service provider for the CIRA Domain Dispute Resolution Policy of
the Internet Registration Authority (C IRA), is as follow (Rules, paras. 3.2(h) and (i)):
- The Complainant filed a complaint against the Registrant with The British Columbia
International Commercial Arbitration Centre, requesting that the current registration of the
Domain name — synvisc.ca — be transferred to the Complainant. The Complaint was received
by BCICAC on September 21, 2007.
Genzyme Corporation (Genzyme), the Complainant is the owner of the Canadian
registered trade-mark: SYNVISC since May 13, 1988 under the Registration number TMA
340,261.
-
F...Factual background of the Complainant
17...The Complainant uses SYNVISC Registered trade-mark in Canada and in numerous
countries throughout the world in association with its pharmaceutical treatment for
osteoarthritis of the knee. The SYNVISC trade-mark was first used October 25, 1985 and has
been continuously used since that time by the Complainant.
18...The registration is now in the name of GENZIME CORPORATION and continues to be
in good standing with the Canadian Intellectual Property Office (CIPO). As such, the
SYNVISC trade-mark qualifies as a mark under paragraph 3.2(c) of the Policy.
19...In addition to its Canadian trade-mark registrations, the Complainant owns SYNVISC
registrations in a number of countries, including those listed below:
--- Country
Registration No.
Registration Date
...United State of America
...United Kingdom
...Australia
...Benelux
1418125
1295782
457566
427002
Nov. 25, 1986
Oct. 7, 1988
Nov. 1, 1988
Oct. 1, 1987
20...The Complainant advertises and describes its SYNVISC pharmaceutical treatment at the
domain name SYNVISC.COM. Genzyme registered this domain name in November 1997
and has used SYNVISC.COM since that date. This site can be accessed by any Internet user
in Canada.
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G...Factual background of the Registrant and other facts
21...The Registrant registered the Domain Name SYNVISC.CA on November 8, 2001, long
time after Genzyme has began using its SYNVISC mark, and after the effective date of
Genzyme's trade-mark registration in Canada and elsewhere.
22...The Registrant used the Domain Name in 2003 and 2004 for a website displaying links
to third-party pharmacy websites.
23...We can belief that the Registrant receives -- click-through — commissions when Internet
users click on the links displayed on the Registrant's website.
24...From mid-2004 until the present, the web pages displaying links to third-party pharmacy
websites have been removed. The Domain Name has not hosted any websites since mid2004.
25...On April 25, 2007, the Complainant, through its undersigned counsel, sent a letter to the
postal box of the Registrant notifying him of the Complainant's trade-mark rights in the
SYNVISC trade-mark and the Domain Name.
26...The Complainant also requested in the letter that the Registrant transfer the Domain
Name to the Complainant.
27...To date, the Registrant has not responded.
28...The Registrant had also registered the domain names: SYNVISK.COM , SINVISC.COM
and SINVISC.COM which are common misspelling of the Complainant's trade-mark.
29...The Registrant had used these domain names to also host websites displaying links to a
third-party pharmacy websites.
30...Ultimately, these domain names were transferred to the Complainant in a recent ICANN
Uniform Dispute Resolution Policy ( UDRP ) proceeding ( Genzyme Corporation v. Johnny
Carpela, FA959633, Nat. Arb. Forum, May 22, 2007).
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31... The Registrant has additionally registered numerous domain names that incorporate
trade-marks owned by third parties or incorporate common misspelling of trade-marks owned
by third parties that are associated with pharmaceutical products. A list of examples of such
domain names is provided below:
...Domain Name
AVENTYL.COM
BETATREX.COM
BROMETANE.COM
CARAFATE.COM
DARANIDE.COM
EFFEXOR.COM
FLOXMAX.NET
HITINEX.COM
ILOTYCIN.COM
LAMISAL.COM
LUSTRACREAM.COM
MELANEX.COM
MEFERGAN.COM
MYAMBUTOL.COM
NALFON.COM
NAXIUM.COM
ORTHOVISC.BIZ
ORTHOVISC.INFO
ORTHOVISC.ORG
ORTHOVISC.US
PREMARIN.CA
RAPIFLUX.COM
Trade-mark
AVENTYL
BETATREX
BROMETANE DX
CARAFATE
DARANIDE
EFFEXOR
FLOMAX
HISTINEX
ILOTYCIN
LAMISIL
LUSTRA
MELANEX
MEFERGAN
AMBUTOL
NALFON
NEXIUM
ORTHOVISC
ORTHOVISC
ORTHOVISC
ORTHOVISC
PREMARIN
RAPIFLUX
32...Many of the above listed domain names registered by the Registrant are also used to host
websites displaying links to third-party pharmacy websites. It is belief that the Registrant
receives -- click-through — commissions when interne users click on the links displayed on
these websites.
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33...The Registrant has been forced to transfer several domain names incorporating the trademarks owned by third parties to the owners of trade-marks under the orders of various UDRP
Panels as listed below. All of the domain names transferred hosted websites containing links
to third-party pharmacy websites.
...Decision Citation
CVS Pharmacy, Inc. v. Johnny Carpela
Case No. D2004 0038, WIPO March 31, 2004
-
AstraZeneca AB v. Johnny Carpela
Trade-mark
CVS PHARMACY
(an online pharmacy service)
Case No.D2005 0352, WIPO May 23, 2005
ASTROZENECA
(pharmaceutical company)
Procter & Gamble Pharmaceuticals, Inc. v.
Johnny Carpela, FA625591, Nat. Arb.
ACTONEL
(pharmaceutical product)
Ivax Research, Inc. v. Johnny Carpela
PROGLYCEM
(pharmaceutical product)
-
Forum Feb. 20, 2006.
Case No. D2007-0624, WIPO July 13, 2007
34...As of the date of submitting the Complaint, the Domain Name Synvisc.ca was still
operable and listed to the Registrant.
H...CIRA Domain Name Dispute Resolution Policy Requirements
35...Paragraph 3.1 of the Policy requires the complainant to establish that:
...(a) the Registrant 's dot-ca domain name is Confusingly Similar to a mark in which the
Complainant had Rights prior to the date of registration of the domain name
Continues to have such Rights;
(b) the Registrant has no legitimate interest in the domain name as describe in paragrap
h
3.6; and
(c) the Registrant has registered the domain name in bad faith as describe in paragraph
3.7.
36...According to paragraph 4.1 of the Policy, the Complainant must establish element (a)
and (c) above on a balance of probabilities.
37...The Complainant must also provide -- some evidence — that the Registrant has no
legitimate interest in the domain name.
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I... Analysis
Confusing Similar to a Mark in which the Complainant had rights
38...In order to succeed with the Complaint, the Complainant must first establish that: the
Registrant's dot-ca domain name is confusingly Similar to a Mark in which the Complainant
had Rights prior to the date of registration of the domain name and continues to ha such
rights, (Policy, sub-para.3.1). The Policy contains definitions of each of the terms -- Mark --,
Rights — and Confusingly Similar.
39...The definition of a — Mark — is found in subparagraph 3.2 of the Policy. Sub-paragraph
3.2 (c ) provides:
...3.2 Mark. A —Mark- is:
...( c ) a trade-mark, including the word elements of a design mark, that is registered in
CIPO;
40...The definition of - Rights — is found in sub-paragraph 3.3, Sub-paragraph 3.3(b)
provides that the person, predecessor in title or a licensor of that person;
41... The Arbitrator finds that the Complainant has rights in the registered trade-mark
Synvisc.ca and finds that the Complainant has established its rights in the mark SYNVISC,
having registered the trade-mark, nearly 13 years before in Canada and having used it, 16
years before the Registrant.
42...Further, the Domain Name SYNVISC.CA was registered 4 years after the Complainant
had establish an online presence for its SYNVISC pharmaceutical products via the
SYNVISC.COM domain name.
43...The Complainant clearly has prior Rights in accordance with paragraph 3.3 of the Policy
and continues to have such Rights.
44...It cannot be dispute that a person, on a first impression, knowing the Complainant's
corresponding mark and having an imperfect recollection of it, it would likely mistake the
Domain Name, without the .ca suffix, for the Complainant's corresponding mark based upon
the appearance, sound and ideas suggested by the mark, Government o Canada v. Bedford
(CIRA Decision My 2007, 2003, p. 15).
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Registrant has No Legitimate Interest in the Mark or in respect to the Domain Name
45...Under sub-paragraph 4.1( c) of the Policy, the Complainant must provide some evidence
that — the Registrant has no legitimate interest in the domain name --. Paragraph 3.6 identifies
six circumstances in which a legitimate interest may arise. These are:
...( a ) the domain name was a Mark, the Registrant used the Mark in god faith and the
Registrant had Rights in the Mark;
(b) the Registrant used the domain name in Canada in good faith in association with
any wares, services or business and the domain name was clearly descriptive
in Canada in the English or French language of : (i) the character or quality
of the wares, services or business; (ii) the conditions of the persons
employed in, production of the wares, performance of the services or operation
of the business; or (iii) the place of origin of the wares, services or business;
(c) the Registrant used the domain name in Canada in good faith in association with
any wares, services or business and the domain name was understood in Canada
to be generic name thereof in any language;
(d) the Registrant used the domain name in Canada in good faith in association with
a non commercial activity including, without limitation, criticism, review or news
reporting;
(e) the domain name comprised the legal name of the Registrant or was a name,
surname or other reference by which the Registrant was commonly identified; or
(f) the domain name was the geographical name of the location of the Registrant's
non commercial activity or place of business.
46...The Complainant submitted that the Registrant has no legitimate interest in the Domain
Name as define in Paragraph 3.6 of the Policy. The Registrant's use of the Domain Name
does not satisfy any of the criteria set out Paragraph 3.6 of the Policy.
47...In particular, the Registrant has not been using the Domain Name in good faith, as the
Domain Name links Internet visitors who seeks to visit the website of the Complainant (but
who enter the Domain Name Synvisc.ca ) to its own competing business and website located
at DomainsAtCost Corp.
48...By choosing to register a domain name which corresponds to a well-established trademark had a highly visited corresponding dot corn website (SYNVISC.COM ), the Registrant is
profiting from the visitors seeking information about the Complainant. (Policy, paragraph 3.6
(a)).
49...The Complainant had already submits that the Domain Name is confusingly similar to
the SYNVISC Registered Mark and the domain name SYNVISC.COM of which the
Complainant is the sole and exclusive owner.
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50...According to paragraph 1.2 of the Policy, the Domain Name is to be compared without
reference to the dot-ca suffix. Thus for the purposes of the Policy, the Domain Name is -identical -- to the SYNVISC Registered Mark. It is also — identical — to the SYNVISC.COM
domain name.
The Registrant Registered and is using the Domain Name in bad faith
51... The exclusive bases for a finding of bad faith registration are set out in sub-paragraph 3.7
of the Policy. They are:
...3.7 ...Registration in bad faith. For the purposes of a paragraph 3.1 (c ), a Registr
ant
Will considered to have registered a domain name in bad faith if and only if:
...(a) The registrant registered the domain name, or acquired the Registration
primarily for the of selling, renting, licensing or otherwise transferring the
Registration to the Complainant, or the Complainant's licensor or licensee
on the Mark, or to a competitor of the Complainant or the licensee or licensor
for valuable consideration in excess of the Registrant's actual cost in registering
the domain name, or acquiring the Registration;
(b) the Registrant registered the domain name or acquire the Registration in order
to prevent the Complaint, or the Complainant's licensor or licensee of Mark,
from registering the Mark as a domain name, provide that the Registrant,
alone or in concert with one or more additional persons has engaged in a
pattern of registering domain names in order to prevent persons who have
Rights in Marks fron registering the Marks as domain names; or
(c) the Registrant registered the domain name or acquired the Registration
primarily, for the purpose of disrupting the business of the Complainant,
or the Complainant's' licensor or licensee of the Mark, who is a competitor
of the Registrant.
52 ...The Complainant submitted that the Registrant has registered the Domain Name
in bad faith, as set forth in paragraph 3.7 of the Policy. The evidence establishes that
the Registrant registered the Domain Name primarily for the purpose of disrupting
the business of the Complainant, who is a competitor of the Registrant. (Policy,
paragraph 3.7 (c )).
53...Further, bad faith may be established by taking into consideration all surrounding circum
stances and drawing common sense inferences from those circumstances (see CBC
v. Quon,
CIRA Dispute 00006, April 8, 2003; and Coca-Cola v. Hennan, CIRA Dispute 00014,
October 23, 2003).
54...The Registrant, by registering a domain name identical to the Complainant's mark in
linking the Domain Name to a business that offers goods and services of the Complainant, is
disrupting his business. See (Glaxo Group Limited v. Defining Presence Marketing Group
Inc. (Manitoba)) (CIRA Decision No. 00020).
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55 Finally, previous CIRA Panels have also held that where a Domain Name bears no
connection to a Registrant, it is reasonable to infer that the Domain Name was acquired
primarily for the purpose of disrupting yhe business of the Complainant. (See Sam Ash Music
Corporation v. LAMUSIC, CIRA Dispute 00067, October 15, 2006, at 8); and (Browne &
Co. Ltd v. Bluebird industries, CIRA Dispute 00002, October 22, 2002 at 19).
56...In any event, the Arbitrator finds that the Complainant has met the requirements to
satisfy the balance of probability that the Domain Name was registered by the Registrant in
bad faith under paragraph 3.7 (b) and as per paragraph 3.7 (c) of the Policy.
J... Conclusion
57...It is established that the Complainant had its rights in the Mark SYNVISC which
predated he registration of the disputed Domain Name. Considering that the Registrant has no
legitimate interest in the Domain Name, the Complainant has been able to establish that
registration of the disputed Domain Name was in bad faith within the meaning of paragraph
3.7 of the Policy.
58...Considering that proof f bad faith registration is an essential requirement under the
Policy, I agree with the Complainant and order the transfer of the Domain Name Synvisc.ca
to the Complainant.
Jacques Biron, Arbitrator
November 9, 2007